Bayer Bioscience N.V. v Deltapine Australia Ltd (No 2) [2007] FCA 411

FEDERAL COURT OF AUSTRALIA

Bayer Bioscience N.V. v Deltapine Australia Ltd (No 2) [2007] FCA 411

PATENTS – application to amend defence/cross-claim to include new ground of invalidity Held: discretion not exercised Queensland v JL Holdings (1997) 189 CLR 146 cited BAYER BIOSCIENCE N.V. AND BAYER CROPSCIENCE GMBH v DELTAPINE AUSTRALIA PTY LTD VID 1105 OF 2003

HEEREY J

15 MARCH 2007

MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 1105 OF 2003

BETWEEN: BAYER BIOSCIENCE N.V.

First Applicant/First Cross-Respondent

BAYER CROPSCIENCE GMBH

Second Applicant/Second Cross-Respondent

AND: DELTAPINE AUSTRALIA PTY LTD

Respondent/Cross-Claimant

JUDGE: HEEREY J DATE OF ORDER: 15 MARCH 2007

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

The motion on notice dated 9 March 2007 is dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 1105 OF 2003

BETWEEN: BAYER BIOSCIENCE N.V.

First Applicant/First Cross-Respondent

BAYER CROPSCIENCE GMBH

Second Applicant/Second Cross-Respondent

AND: DELTAPINE AUSTRALIA PTY LTD

Respondent/Cross-Claimant

JUDGE: HEEREY J

DATE: 15 MARCH 2007

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 The applicant/cross-respondent Bayer Bioscience NV (Bayer) is the patentee of Australian Patent No 623530 (the Patent). It has brought infringement proceedings against the respondent/cross-claimant Deltapine Australia Pty Ltd (Deltapine). By notice of motion filed on 9 March 2007 Deltapine seeks leave to amend its defence and cross-claim by raising an allegation of invalidity based on the contention that the true inventor was Dr Christina Hofmann. 2 The invention the subject of the Patent relates to plant cells and plants, the genomes of which are transformed to contain at least two genes, each coding for a different non-competitively binding bacillus thuringiensis (Bt) insecticidal crystal protein (ICP) for a specific target insect species. 3 In the particulars to par 9 of the draft further amended particulars of invalidity exhibited to an affidavit in support of the motion it is said that Dr Hofmann undertook research in this area between 1983-1989, and then in 1987 she spent some time working at the laboratories of a predecessor in title to Bayer. While at that firm, Dr Hofmann worked "with a number of researchers, including some of the alleged inventors", and that "as a result of the research and/or while working at that firm either alone or with the alleged inventors, Dr Hofmann developed and disclosed all or part of the alleged invention claimed in the patent". Deltapine seeks to reserve the right to rely on further particulars. 4 The onus is on Deltapine to make out a case that the Court should exercise its discretion in its favour. I am not disposed to exercise that discretion for the following reasons: · There is no evidence, even on a hearsay basis, as to the merits of the amendment. The allegations are broad and vague in the extreme. They deal with events of 20 years ago. · There is no evidence explaining the delay of Deltapine in bringing this application. 5 The proposed amendments also include an allegation that Dr Hofmann assigned her rights to Delta and Pine Land Company by a deed of assignment dated 7 April 2006. It is also claimed that there was a further assignment to Deltapine dated 26 January 2007. Those assignments were not produced, but they found the inference that the alleged claim of Dr Hofmann was within the knowledge of Deltapine or its associates almost a year ago. 6 It was said from the Bar table that Deltapine made a conscious decision not to raise this particular claim until late last year. I agree with counsel for Bayer that the decision of the High Court in Queensland v JL Holdings Pty Ltd (1997) 189 CLR 146 does not mean that parties have a right to withhold amendments or other procedural steps to suit their tactical assessments of the case. Even by the standards of patent litigation in this country, which sometimes are the subject of criticism, this case has been very drawn out. It has been on foot since 2003. Any insertion of a totally new claim or defence needs to have some sound basis, which in my opinion has not been shown in this case. 7 The motion on notice dated 9 March 2007 will be dismissed with costs. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.